Ashley Furniture Industries, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1306001505525
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleysfurnitures.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2013; the National Arbitration Forum received payment on June 21, 2013.
On June 21, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <ashleysfurnitures.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ashleysfurnitures.com. Also on June 21, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleyfurnitures.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ASHLEY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of various trademarks using the ASHLEY name. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990), as well as for its ASHLEY FURNITURE & Design mark (Reg. No. 2,894,665 registered October 19, 2004). Complainant uses its mark to designate its retail furniture business. Complainant has used its ASHLEY mark on furniture in interstate commerce since as early as 1946.
Respondent registered the <ashleysfurnitures.com> domain name on January 6, 2006. The domain name resolves to a website that displays a “parked” website, which includes links to other websites, including those which offer products similar to those offered by Complainant. The disputed domain name is confusingly similar to Complainant’s mark. Respondent does not make a legitimate noncommercial or fair use of the domain name, as evidenced by the fact that Respondent is not commonly known by the domain name, and Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent has demonstrated bad faith registration and use of the <ashleysfurnitures.com> domain name, because Respondent uses the resolving website to host hyperlinks to competing entities, which result in diverting consumers seeking Complainant’s website to competing businesses and allow Complainant to receive compensation in exchange. Respondent is not authorized to use Complainant’s ASHLEY marks in any manner, and uses the domain name to divert and frustrate consumers who are looking for Complainant’s online furniture store.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant owns rights in the ASHLEY mark, and provided evidence showing its USPTO registration of the ASHLEY mark (e.g., Reg. No. 1,600,879 registered June 12, 1990). Complainant’s USPTO registration adequately demonstrates that it has rights in the ASHLEY mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Respondent resides in Saint Vincent and the Grenadines, however, Policy ¶ 4(a)(i) does not require Complainant to own a trademark registration in Respondent’s country of residence in order for Complainant to establish rights in its mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The <ashleysfurnitures.com> domain name is confusingly similar to Complainant’s registered trademarks, because the domain name incorporates the ASHLEY mark, which is registered for furniture, and includes the descriptive term “furniture,” with each term followed by the letter “s.” The domain name also includes the generic top-level domain (“gTLD”) “.com.” These changes do not prevent confusing similarity to Complainant’s ASHLEY mark for the purposes of Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It is difficult to verify Respondent’s true name, because Respondent appears to have registered the domain name through a proxy service. Nonetheless, Respondent has not been licensed or authorized to use Complainant’s mark in a domain name. The panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), found that the respondent did not demonstrate rights or legitimate interests in the disputed domain name, as it was not authorized to register domain names using the complainant’s mark. This Panel similarly concludes that, absent authorization from Complainant to use the ASHLEY mark or any other affirmative evidence, Respondent does not possess rights or legitimate interests in the <ashleysfurnitures.com> domain name under Policy ¶ 4(c)(ii), as it is not commonly known by the domain name.
Respondent uses the resolving website to park hyperlinks to other websites that offer competing goods. Customers who attempt to locate Complainant’s furniture products might be diverted to the competing websites, under the false impression that they are associated with Complainant. Respondent fails to use the <ashleysfurnitures.com> domain name in a way that demonstrates a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) due to Complainant’s use of the domain name to park hyperlinks at the resolving website. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s bad faith registration and use of the domain name is shown by its use of a parked website offering only links to other websites that offer products manufactured and distributed by Complainant’s competitors. Respondent presumably receives a benefit or compensation for allowing its domain name to be parked. The panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), held that the respondent used the disputed domain name to operate a website featuring links to competing and non-competing commercial websites, from which the respondent was presumed to receive referral fees, and was found to have registered and used the domain name in bad faith. This Panel similarly finds that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) by using the confusingly similar domain name to attract Internet users to the resolving website in order to gather referral fees by posting hyperlinks to businesses in competition with Complainant.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Note
This is a default proceeding. The domain name at issue was registered in January of 2006. Had Respondent filed a response and defended on the grounds of laches, this Panel would have seriously considered that defense.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleysfurnitures.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 19, 2013
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